Appellate Court Overturns Blackboard Patent; Blackboard To Press On

Blackboard's patent on learning management system technologies has been overturned by the United States Court of Appeals for the Federal Circuit. The court ruled Monday in favor of Desire2Learn and invalidated some claims in patent No. 6,988,138, also known as the "Alcorn patent" or the "138 patent." But the saga will continue.

The ruling may bring to end one portion of a years-long dispute between Blackboard and Desire2learn, one whose implications and contentiousness have reached out well beyond the courtroom. Today's decision invalidated claims 36 through 38 of the Alcorn patent and upheld a lower court's invalidation of claims 1 through 35--all of the claims for which Blackboard had been suing Desire2Learn in this particular case. Claims 39 through 44 were apparently not at issue in the appeal, though the United States Patent and Trademark Office (USPTO) is continuing its reexamination of those claims and has rejected them in a non-final decision.

But Blackboard is continuing its litigation against Desire2learn on other intellectual property issues involving patents that the company has been granted since the Alcorn patent. And, according to Blackboard Chief Business Officer Matthew Small, Blackboard will appeal today's decision. Small characterized Monday's ruling as a disappointment, but a minor one in the company's plans.

"This obviously was a disappointing decision for Blackboard," he told us in a phone interview. "But I think most importantly we have received several other patents since the outset of the Desire2learn case, and the issues addressed here by the appellate court are not present in those patents. And, in fact, we are in litigation with Desire2learn in three other suits. ... [T]his doesn't affect any of those patents or any of those litigations.

"The important fact here is that we are asking Dersire2Learn to either pay a reasonable royalty or make a valid workaround rather than using our intellectual property. And we believe they are infringing multiple patents of ours, and we will continue to pursue what we believe is a fair result in the appropriate venues," he said.

"This is really just a blip in the overall intellectual property dispute between Blackboard and Desire2Learn. I don't think it changes their prospects as a company one bit."

Desire2Learn doesn't see it exactly the same way.

"It is a definitive win," said John Baker, president and CEO of Desire2Learn, in an e-mail. "We are celebrating this victory for Desire2Learn and education as a whole. We are incredibly appreciative of the support we have received from the educational community. We look forward to the day that Blackboard will return the judgment paid."

Looking Back: The Controversy BeginsBlackboard is the developer of the most widely adopted commercial learning management system. The company became the focus of contention within education technology circles when, in 2006, it obtained a patent for "technology used for Internet-based education support systems and methods" and then filed a patent-infringement suit against rival Desire2Learn in July 2006. The move immediately raised the ire of educators, IT professionals in education, and other observers. In October 2006, Educause President Brian L. Hawkins wrote a letter to Blackboard CEO Michael Chasen requesting that Blackboard "disclaim the rights established under [Blackboard's] recently-awarded patent, placing the patent in the public domain and withdrawing the claim of infringement against Desire2Learn." That letter was approved unanimously by Educause's board of directors Oct. 8 and 9 and became public in late October 2006.

CountermovesIn November 2006, the Software Freedom Law Center (SFLC), a FOSS legal advocacy group, filed an ex parte request with the USPTO to reexamine the patent on the basis of its assertion that Blackboard's patent was invalid owing to the existence of "prior art," or examples of the technologies Blackboard had patented that existed prior to Blackboard's patent application. The move was made on behalf of open source developers Sakai and Moodle, among others, whose leaders worried that the Alcorn patent would stifle their development efforts or even potentially force their learning management systems off the market.

In December 2006, Desire2Learn filed a request with the USPTO to reexamine the validity of Blackboard's patent.

In January 2007, the USPTO agreed to the SFLC's request and decided that it would reexamine Blackboard's patent. Desire2Learn was granted its request in February 2007.

Blackboard, however, made concessions to the open source community, releasing a legally binding pledge that it would never assert its patent claims against an open source developer, among other things. The pledge fell short of the SFLC's demand for Blackboard to renounce the patent, however, and the move was greeted with a mixture of relief and continued outrage at Blackboard's unwillingness to drop its suit against Desire2learn and unwillingness to renounce the patent claims.

Early Victory and Setbacks for the PatentIn February 2008, a jury in the U.S. District Court for the Eastern District of Texas awarded Blackboard $3.1 million from Desire2Learn for patent infringement (considerably less than what was sought) and refused to invalidate Blackboard's patent. In March 2008, the court enjoined Desire2Learn from selling its Desire2Learn Learning Environment 8.2.2 or earlier in the United States, giving the company 60 days to comply. Soon after, Desire2Learn released Learning Environment 8.3 as a "workaround candidate."

In making its determination, the USPTO said that it had found "a substantial new question of patentability" from the objections raised on both the inter partes reexamination request filed by Desire2Learn and the ex parte reexam request filed by the Software Freedom Law Center (SFLC).

Despite this rejection, in June, Blackboard continued its action against Desire2Learn, filing a contempt motion against the company with the U.S. District Court for the Eastern District of Texas, Lufkin Division, claiming that Learning Environment 8.3 did not sufficiently address the intellectual property issues.

The Appellate Court's Decision The decision issued today hinged largely on the definition of a "user" as applied in Blackboard's patent filing.

"To decide that issue, the Appellate Court first had to define the word 'user' in the '138 Patent," Desire2Learn wrote in a blog post today. "Blackboard argued that the term 'user' refers to an electronic user account, and that a user account is defined by a single user name and password combination."

The court decided, essentially, that a user was defined as a flesh and blood human being, rather than an account. So, the court found, the claims in Blackboard's patent would step on prior art, in particular the software known as CourseInfo and Serf.

According to the ruling: "On the merits, we agree with Desire2Learn that claims 36-38, as properly construed, are invalid for anticipation as a matter of law by CourseInfo 1.5 and Serf."

Following today's ruling, Blackboard now has 30 days to file paperwork in its appeal of the court's decision. We'll keep you posted on any developments.